Navigating the Intersection of Public Funding and Private Rights
Universities and Research Institutions operating on federal grants (NIH, NSF, DOD) face a complex web of compliance regulations. Converting government-funded discoveries into private assets requires navigating the Bayh-Dole Act, export controls, and strict reporting deadlines.
At the R. Baca Law Firm, we possess direct "insider" experience with the federal technology transfer ecosystem. Our Managing Member served at the Sandia National Laboratories Technology Transfer Center (a national nuclear and Homeland Security laboratory), working directly on Cooperative Research and Development Agreements (CRADAs) and licensing agreements with Fortune 100 companies. We understand that for Principal Investigators and TTOs, compliance is not just paperwork—it is the prerequisite for commercialization.
Core Compliance Services
1. CRADAs & Public-Private Partnerships
We structure the legal frameworks that allow private industry to collaborate with federal and academic laboratories.
- Agreement Structuring: We draft and negotiate CRADAs (Cooperative Research and Development Agreements) and Work-for-Others (WFO) agreements, ensuring that rights to background and foreground IP are clearly defined.
- National Lab Expertise: Drawing on our experience at Sandia National Laboratories, we understand the unique statutory constraints placed on DOE and DOD facilities regarding liability, indemnification, and publication rights.
2. Grant Compliance (NIH, NSF, DOD)
Federal funding comes with "strings attached." We assist Principal Investigators and University TTOs in maintaining eligibility and ownership.
- Invention Reporting: We advise on the timely reporting of subject inventions to federal agencies to prevent the loss of title to the government.
- Fellowship & Grant Navigation: Our Technical Advisor, Dr. Arthur Baca, is a recipient of the Whitaker Foundation Predoctoral Fellowship and the Achievement Rewards for College Scientists Fellowship. We understand the specific IP policies attached to prestigious biomedical funding sources.
3. Export Control & International Trade
Research involving "Dual-Use" technologies (technologies with both civilian and military applications) triggers strict export control regulations (ITAR/EAR).
- Export Compliance: As a Certified International Export Business Leader (via the U.S. Dept. of Commerce Export Assistance Center), we advise on the export of technology-based products and technical data.
- Cross-Border Research: We facilitate international research collaborations between U.S. institutions and Latin American partners (like Monterrey Tech), ensuring compliance with U.S. export laws while fostering open innovation.
4. "Dual-Use" Technology Protection
We specialize in prosecuting patents for technologies that serve both national security and commercial markets.
- Homeland Security & Nuclear: Our background includes work on Homeland Security projects and nuclear laboratory technologies, giving us the clearance mindset necessary for sensitive prosecution.
- Advanced Engineering: We handle complex prosecution in Semiconductors, Bio-defense, and Aerospace, utilizing team members with backgrounds in Wafer Fabrication and Microprocessor Architecture to describe technologies with precision.
Why Research Institutions Partner With Us
- The "Sandia" Pedigree: We don't just know the theory of Technology Transfer; we practiced it at one of the nation's premier National Laboratories.
- Scientist-to-Scientist Dialogue: Our team includes MDs and PhDs who have developed licensed technologies themselves. Dr. Arthur Baca developed an E. coli expression strain licensed to a biotech firm used in labs worldwide. We understand the journey from the grant proposal to the licensing check.
- Regulatory Leadership: Our leadership on the Digital Deputy Act and AI Governance ensures that your research complies with emerging ethical and legal standards for software and data.
